Monday, September 17, 2007

Precedential No. 58: TTAB Affirms Disclaimer Requirement of "TOGGS" and 2(d) Refusal of "ZOGGS TOGGS" over "TOG & Design" for Swimsuits

Those precedential decisions just keep on rolling in. In the latest, the Board affirmed a disclaimer requirement of TOGGS in the mark ZOGGS TOGGS for swimsuits and t-shirts, and a Section 2(d) refusal of the mark on the ground of likely confusion with the registered mark ZOG & Design (shown below) for overlapping goods. Applicant unsuccessfully argued that ZOGGS TOGGS is a unitary mark for which a disclaimer is not required, and that its ownership of a now-cancelled registration of ZOGGS for the same goods should be dispositive. In re Ginc UK Limited, 90 USPQ2d 1472 (TTAB 2007) [precedential].

Disclaimer: Dictionary definitions and third-party disclaimers of "togs" convinced the Board that the term is merely descriptive of clothing. Applicant's slight misspelling did not overcome the word's generic meaning. Applicant contended that ZOGGS TOGGS is a unitary mark because of its rhyming pattern, but the Board disagreed: "The two terms are visually similar, but they are not physically joined or otherwise so visually integrated that TOGGS would not be viewed as a separable element."

Likelihood of Confusion: Applicant argued that the marks not only sound different but have different meanings: Zog will be perceived as the name of an Albanian King, Zog I, whereas ZOGG TOGGS has no apparent dictionary meaning.

Zog I of Albania

The Board, however, found ZOG and ZOGGS to be the most significant parts of the respective marks. Moreover, the word ZOG and not the design portion of the registered mark is more likely to impact purchasers and be remembered by them. The marks are also identical in meaning, and the overall commercial impression of the marks is at least similar. As to Zog I, "it is unclear whether most consumers would be familiar with or aware of this historical figure." And the fact that ZOG is "unique and arbitrary, if not coined" increases the likelihood of confusion.

"[P]urchasers are likely to perceive ZOGGS TOGGS as simply a different version of registrant's ZOG and design mark or are likely to assume that the marks identify different clothing lines from the same source."

Finally, Applicant pointed out that it previously owned a now-cancelled registration for ZOGGS TOGGS for the identical goods, and the cited registration for ZOG & Design issued over that now-cancelled registration. So, Applicant argued, the USPTO has already determined that there is no likely confusion between the marks.

Not so fast, said the Board. A cancelled registration is not entitled to any of the statutory presumptions of Section 7(b) of the Trademark Act. Moreover, the Board must decide this case on the record before it, and is not bound by a previous examining attorney's determination.

The Board therefore affirmed both the disclaimer requirement and the Section 2(d) refusal.

TTABlog note: See the Board's non-precedential decision (here) issued on September 29, 2006, in Application S.N. 76571967, involving Applicant's mark TOGGS for similar goods. The Board affirmed a Section 2(d) refusal over the same ZOG & Design registration as involved here.

Text Copyright John L. Welch 2007.


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